Trademark registrants take note – a recent decision from the Trademarks Opposition Board (TMOB) highlights the relatively low evidentiary threshold required to maintain a trademark registration in the context of a Section 45 summary expungement proceeding.
At the request of Deeth Williams Wall LLP (the Requesting Party), a Section 45 notice was issued requiring Rachel Ettinger (the Registered Owner) to show that the mark “HERE FOR HER” (the Mark) had been used in Canada within the previous three years. The three-year period (the Relevant Period) was 23 January 2022 to 23 January 2025.
The Mark was registered in association with “providing information in the field of women’s health issues via an online blog”.
In response to the notice, the Registered Owner filed evidence comprising archived screen captures from November 2022 and March 2023 of her blog displaying the Mark. The blog had not been updated since December 2020. The Registered Owner also filed analytical reports from her website hosting provider showing that the blog was accessed by Canadians during the Relevant Period.
The Requesting Party alleged, inter alia, that the analytical reports from the website hosting provider were inadmissible hearsay, and that because the website had not been updated since December 2020, it could not be considered a “blog”.
The TMOB rejected both of these arguments.
Regarding the hearsay allegation, while acknowledging that the analytical report from the website hosting provider was hearsay, the TMOB concluded it was both necessary and reliable (and therefore admissible). The TMOB noted that it would be difficult for a website owner to prove Canadian access to an online blog in any other way.
Regarding the allegation that the website had not been updated since December 2020 and was therefore not a “blog”, the TMOB noted that the evidence showed that the blog site was accessed during the Relevant Period and that it was immaterial that the blog posts occurred before the Relevant Period.
This decision from the TMOB confirms that a relatively low evidentiary threshold is required to maintain a trademark registration in the context of a s. 45 proceeding, and that the TMOB tends to avoid taking an overly technical approach when assessing evidence.
A full copy of the decision is available here: https://canlii.ca/t/khzsr